Here’s the latest.

Federal Circuit Judge Calls High Court IP Decisions “Inconsistent”

Reported by Dorothy Atkins at Law360

Judge Raymond Chen of the Federal Circuit spoke on Thursday at 3rd Annual Berkeley-Tsinghua Conference on Transnational IP Litigation. Dorothy Allen recaps Judge Chen’s comments where he called the Supreme Court’s decisions on patent-eligibility “inconsistent” with its intended policy. Judge Chen is looking for some clarity either from Congress or the Supreme Court on the intermingling of novelty with patent-eligibility.

“It’s left people like me, who are implementing Supreme Court precedent, in some state of instability with the law, and I do think that if Congress intervened, it could help clarify a lot of things,” Judge Chen said. “I think that this mixing of the novelty question and patent-eligibility question, if we could remove that, I think we would be in a much clearer, and much more stable, and much more common-sense zone than where we are now.”

Judge Chen also expressed a desire for the USPTO to review the best prior art available at the time of examination, not at a later review of the patent. Additionally, Judge Chen was hopeful, but not optimistic, about the idea of harmonizing patent laws across the world.

Intel Trial Will Stay in Waco as Federal Circuit Declines to Weigh in

Reported by Perry Cooper at Bloomberg Law

The courthouse in Waco will see a patent trial in February after the Federal Circuit declined Intel’s request to overturn Judge Albright’s transfer of VLSI technology’s case from Austin. Perry Cooper summarizes the order which considered Judge Albright’s decision in light of the Austin courthouse being closed due to the pandemic. While the venue was initially transferred to Austin, the Federal Circuit concluded here that the goals of the original transfer could not be met.

“While we may have evaluated these factors and the parties’ arguments differently, we are unable to say that the district court’s conclusion amounts to a clear abuse of discretion,” the Federal Circuit said.

The Federal Circuit originally granted a writ of mandamus in December blocking the transfer of only the trial to Waco. However, the Federal Circuit suggested in that order that Judge Albright had the authority to transfer the entire case back to Waco.

Iancu Leaves Pro-Patentee Legacy as USPTO Director

Reported by Ryan Davis at Law360

Andrei Iancu stepped down on Wednesday as the new Biden Administration comes into office and expects to name a new Director of the USPTO. Ryan Davis looks back on Iancu’s term of nearly three years. Iancu instituted polices at the PTAB that aligned its claim construction standard with the district court and gave the board discretion to decline reviewing a patent that is also involved in pending litigation.

That has led to the board instituting review of fewer patents and upholding more of the patents it does review, a development that has been welcomed by patent owners but knocked by tech companies, generic-drug makers and others who frequently challenge patents. A lawsuit against the USPTO by several tech giants over the denial policy is pending in California.

The USPTO under Iancu also issued guidance to patent examiners on non-patent-eligible abstract ideas as the Supreme Court has been unclear on the issue. Iancu also strove for greater consistency in the USPTO’s approach to patent eligibility.

The result has been that examiners and the PTAB are now on the same page on eligibility, with a consistent rubric that makes outcomes more predictable, said Courtenay Brinckerhoff of Foley & Lardner LLP, who specializes in life sciences patents.

While several months may pass before a new Director takes office, some in the field indicate that there may be a shift in policy, but likely not a large shift as the USPTO tends to be a less political area of the government.